COMMENTARY. Motions to Disqualify Opposing Counsel in Patent Trial and Appeal Board Proceedings
|
|
- Valentine Rogers
- 5 years ago
- Views:
Transcription
1 February 2016 COMMENTARY Motions to Disqualify Opposing Counsel in Patent Trial and Appeal Board Proceedings Motions to disqualify opposing counsel often raise difficult issues of legal ethics. Behind any motion to disqualify, two competing interests are implicated: the client s right to the attorney of its choice versus the need to maintain ethical standards of professional responsibility. Few things are as disconcerting to a litigant as the loss of access to trusted counsel. 1 For these reasons and others, disqualification proceedings can be heated battles. Motions to disqualify opposing counsel in proceedings before federal courts are not uncommon, 2 with such motions being used for both legitimate reasons and purely tactical reasons, such as delaying the trial. 3 With the enactment of the Leahy-Smith America Invents Act (the AIA ), 4 the filing of motions to disqualify counsel may become increasingly common in proceedings before the United States Patent and Trademark Office ( USPTO ). The AIA ushered in a new era of administrative trials before the Patent Trial and Appeal Board ( PTAB or the Board ), with such trials including inter partes review ( IPR ) proceedings, postgrant review ( PGR ) proceedings, covered business method ( CBM ) patent proceedings, and derivation proceedings. Under 37 C.F.R. 42.2, these trials are contested cases adversarial proceedings that are adjudicatory in nature and constituting litigation. 5 In such contested cases, parties may increasingly seek to file disqualification motions for both legitimate and tactical reasons. Under 37 C.F.R (d), the PTAB is expressly given the authority to rule on disqualification motions. Parties seeking to use disqualification motions to their advantage may need to temper their expectations, however, as prevailing on such a motion before the PTAB or even obtaining authorization to file the motion appears to be an uphill battle. The USPTO has stated, unequivocally, that motions to disqualify counsel are disfavored. 6 Decisions by the PTAB indicate that it will act in accordance with this notion: as of the date of publication of this Commentary, the PTAB has denied authorization to file motions to disqualify counsel in multiple proceedings and has not granted authorization in any. 7 Further, the PTAB s decisions indicate that it will likely follow the lead of its predecessor, the Board of Patent Appeals and Interferences ( BPAI ), which set a high bar for disqualification of counsel in interference proceedings. This Commentary details the statutory and regulatory bases for the PTAB s authority to act on disqualification motions, along with the rules and BPAI decisions that 2016 Jones Day. All rights reserved.
2 are likely to guide the PTAB in ruling on these motions. The PTAB s negative treatment of parties requests for authorization to file disqualification motions thus far is described. The PTAB s Authority to Conduct Disqualification Proceedings Under 35 U.S.C. 2(b)(2)(D), the USPTO has the power to establish rules and regulations to govern the conduct of attorneys appearing before the Office. Additionally, under 35 U.S.C. 32, the Director of the USPTO may, after notice and opportunity for a hearing, suspend or exclude from further practice before the USPTO an attorney who does not comply with the rules and regulations established under section 2(b)(2)(D). In accordance with this statutory authority, as part of its consolidated set of rules relating to PTAB trial practice for IPR, PGR, CBM, and derivation proceedings, the USPTO promulgated 37 C.F.R (d), which expressly delegates to the PTAB the authority to disqualify counsel for cause after notice and opportunity for hearing. The PTAB s authority to conduct disqualification proceedings exists while the Board has jurisdiction over a proceeding. 8 In its rulemaking related to the AIA, the USPTO did not establish specific rules governing disqualification proceedings. 9 However, the USPTO s responses to written comments from intellectual property organizations, businesses, and others (as included with the PTAB s Final Rules of Practice 10 ) provide some guidance as to when the PTAB might initiate such proceedings and how they might be conducted. In its responses, the USPTO notes, generally, that [t]he determination whether to disqualify counsel is based on the facts and circumstances of the case, including any response by counsel to the allegation. 11 Other statements indicate that the USPTO endorses a restrained approach to disqualification of counsel. Specifically, the Office states that [m]otions to disqualify opposing counsel are disfavored because they cause delay and are sometimes abused. 12 Finally, the USPTO provides an example situation in which disqualification may be necessary: Some situations... are likely to trigger consideration of whether to disqualify a counsel, e.g., egregious misconduct. 13 In conducting a disqualification proceeding, the PTAB will likely look to the USPTO Rules of Professional Conduct ( USPTO Rules ). 14 These rules apply to all attorneys appearing before the Office, 15 and the BPAI previously applied a similar code of professional responsibility (the Patent and Trademark Office Code of Professional Responsibility ( USPTO Code )) in disqualification proceedings. 16 Pursuant to the authority provided in 35 U.S.C. 2(b)(2)(D) and 32, the USPTO Rules were promulgated in 2013, replacing the USPTO Code to which attorneys appearing before the Office were previously required to conform. 17 The USPTO Rules conform to the Model Rules of Professional Conduct of the American Bar Association, versions of which have been adopted by forty-nine states and the District of Columbia. 18 [B]y far the most common ground for a motion for disqualification is a claim of some form of conflict of interest that either harms the moving party or calls into question the integrity of judicial process at hand. 19 Thus, sections of the USPTO Rules addressing conflicts of interest may be of particular importance in disqualification proceedings before the USPTO. In the USPTO Rules, Section addresses conflicts of interest involving current clients. Under this rule, generally, a current client of an attorney may prevent the attorney from being adverse to it in any matter: [A] practitioner shall not represent a client if the representation involves a concurrent conflict of interest. 20 A concurrent conflict of interest exists, for example, if the representation of one client will be directly adverse to another client. 21 Section of the USPTO Rules addresses duties to former clients. Under Section (a), a former client of an attorney may prevent the attorney from being adverse to it if the matter against the former client is substantially related to the work the attorney previously did for the client. 22 Alternatively, under Section (b), the former client may prevent the attorney from being adverse to it if the attorney acquired confidential information during the former representation that likely can be used against the client in the subsequent adverse representation. 23 The substantial relationship test of Section (a) generally serves as a surrogate for proof that a lawyer obtained confidential information in the initial representation; no proof that the lawyer actually obtained confidences is required. In contrast, to disqualify a lawyer for actually possessing relevant confidences [under Section (b)], the former client must generally show that the lawyer did in fact obtain such information. 24 2
3 Although it is clear that the PTAB may conduct disqualification proceedings under 37 C.F.R (d) and that the PTAB may look to the USPTO Rules of Professional Conduct in conducting the proceedings, these rules may raise more questions than they answer. For example, Section of the USPTO Rules uses the substantial relationship test in former-client conflicts, but the nature of this test varies significantly among the federal circuits, 25 and the rules governing the PTAB provide no guidance in determining when two matters are substantially related. Further, the rules provide no indication as to the extent to which federal court decisions should govern or influence the PTAB in disqualification proceedings. For guidance in answering these questions, one may look to decisions from the PTAB s predecessor, the BPAI. As noted above, the IPR, PGR, CBM, and derivation proceedings currently conducted by the PTAB are contested cases. 26 To understand how the PTAB may handle disqualification motions in these new contested cases, BPAI decisions in other types of contested cases namely, interference proceedings may be instructive. BPAI decisions on disqualification in the context of interference proceedings are described below. BPAI Decisions on Disqualification in Interference Proceedings A patent interference under 35 U.S.C. 135(a) is an adversarial proceeding between two or more parties concerning the award of patent rights for a commonly-claimed invention. An interference is declared for the purpose of determining priority, i.e., which party first invented the commonly-claimed invention. 27 Derivation proceedings under the AIA, although distinct from interference proceedings, will address issues similar to those that may be raised in interferences and will eventually replace interference practice. Interferences will continue to be declared for applications having at least one claim with an effective filing date prior to March 16, The PTAB s predecessor, the BPAI, issued a number of decisions on motions to disqualify opposing counsel within the context of interference proceedings. The most instructive and widely-cited of these decisions is Anderson v. Eppstein. 28 In this case, Anderson filed a motion to disqualify Paul Kokulis ( Kokulis ) and the law firm of Pillsbury, Madison and Sutro, LLP ( Pillsbury ) from representing Eppstein in Interference No. 103, As described below, the BPAI employed a very narrow view of what constitutes a substantial relationship and denied the motion. 30 The basis for Anderson s motion was Kokulis s alleged breach of the duties owed to Anderson as a former client. Anderson s employer, the National Institutes of Health ( NIH ), retained the law firm of Cushman, Darby & Cushman ( Cushman ) to prepare and prosecute U.S. Application No. 07/365,567 ( the 567 application ). 31 The 567 application was the first of a series of continuing applications that led to the grant of the Anderson patent involved in the interference proceeding. 32 Kokulis, a partner at Cushman, signed a task order, accepting for Cushman the task of preparing and filing the 567 application. 33 In the disqualification proceeding, Kokulis testified that he was not involved in the preparation or prosecution of the 567 application and that he signed the task order in the absence of another Cushman partner who was in charge of the NIH work. 34 Kokulis further testified that he did not recall seeing any disclosures describing the subject matter of the 567 application or having any discussions with anyone about the same. 35 The 567 application was abandoned in January In September 1995, Cushman merged with the Pillsbury law firm. 37 Neither Cushman nor Pillsbury was involved with any of the other continuing applications that led to the issuance of the Anderson patent involved in the interference proceeding. 38 Following the grant of the Anderson patent, which was a continuation-in-part of the 567 application, 39 Kokulis was retained by Eppstein to represent him against Anderson in the interference. 40 In the disqualification proceeding, Kokulis testified that when he was retained by Eppstein, he did not appreciate that Cushman had been involved with the 567 application. 41 Kokulis further testified that none of the individuals that prepared and prosecuted the 567 application were with Pillsbury as of the time of the interference. 42 Anderson moved to disqualify Kokulis and Pillsbury on the basis that Kokulis had been involved in prosecuting the 567 application. The BPAI denied Anderson s motion to disqualify. 43 As an initial matter, the BPAI explained that [w]hile the PTO has no specific rules which govern disqualification petitions, generally the provisions of the PTO Code of Professional 3
4 Responsibility, aided by decisions of federal courts, govern resolution of a disqualification. 44 The BPAI further noted that [d]isqualification is resolved on a case-by-case basis, where the moving party bears a heavy burden of proving facts showing that disqualification is necessary. 45 The BPAI s identification of the moving party s heavy burden is telling: as described below, the BPAI goes on to endorse a formulation of the substantial relationship test that sets a very high bar for disqualification in interference proceedings. Anderson argued that disqualification of Kokulis and Pillsbury was necessary under the substantial relationship test relevant to former-client conflicts. 46 In addressing this argument, the BPAI observed that some courts adopt a narrow[] interpretation of what constitutes a substantial relationship. 47 Indicating its agreement with these courts, the BPAI stated: In our view, Anderson must demonstrate that (1) the subject matter of the 567 application is identical or essentially the same as the subject matter in the Anderson patent involved in Interference 103,708, and (2) the relationship between Kokulis and Anderson is a prior representation within the meaning of the substantial relationship test. 48 The identical or essentially the same standard is a narrow interpretation of the substantial relationship test. Applying this narrow interpretation of the substantial relationship test, the BPAI noted that the Cushman firm prepared and prosecuted only the first of a series of several continuing applications that ultimately led to the granting of the Anderson patent and that the Anderson patent was a continuation-inpart of the 567 application with a different specification and different claims. 49 The BPAI acknowledged that there may be some overlap between the disclosure of the Anderson patent and that of the 567 application but indicated that this was insufficient to show a substantial relationship: Anderson has failed to demonstrate, for example, that the 567 application describes or essentially describes the interfering subject matter (i.e., the subject matter of Anderson s claims involved in Interference 103,708). Until that is demonstrated, we decline to find that similar facts and legal issues were involved in the prosecution of [the 567 application] and in Interference 103, does not, without more, demonstrate that 567 is substantially the same or identical to the Anderson patent. Anderson has failed to demonstrate that the claims it compares are identical or essentially the same subject matter. 51 The BPAI also explained that the 567 application was not relied on for priority in the interference proceeding and that therefore, there was an inference that the 567 application and the Anderson patent are not identical or essentially the same. 52 Based on this reasoning, the BPAI found that Anderson had failed to meet the substantial relationship test. 53 Despite this failure, the BPAI noted that Anderson could nevertheless prevail if he could successfully demonstrate that Kokulis actually received confidential information that could be used against him in the interference proceeding. 54 The BPAI stated, [w]hen one lawyer at a firm possesses client confidences gained in the course of a prior representation, it can be presumed that the confidences were shared with other attorneys within the lawyer s firm. However, the presumption is rebuttable. 55 The BPAI credited the testimony of Kokulis that he did not receive any information regarding the 567 application and that he had no involvement in the preparation or prosecution of the 567 application. 56 Based on Kokulis s testimony, the BPAI found that Eppstein had rebutted any presumption that confidences were shared with Kokulis or any attorney at Pillsbury. 57 The BPAI denied Anderson s motion to disqualify. 58 The BPAI s narrow view of what constitutes a substantial relationship relies on authority from the Second Circuit, 59 which endorses a restrained approach to attorney disqualification that avoids unnecessary and unseemly delay. 60 The Second Circuit applies the substantial relationship test strictly, granting disqualification only upon a showing that the relationship between the issues in the prior and present cases is patently clear. Put more specifically, disqualification has been granted or approved... only when the issues involved have been identical or essentially the same. 61 This is a considerably narrower view of the substantial relationship test than is taken by other circuits. 62 For example, in the Tenth Circuit, courts look to whether the factual contexts of the two representations are similar or related. 63 The BPAI further explained that some overlap between a few of the 567 claims and a few of the Anderson patent claims Other BPAI decisions in interference proceedings evidence the USPTO s restrained approach to attorney 4
5 disqualification. 64 As described below, decisions by the PTAB indicate that it will treat disqualification motions in a manner similar to its predecessor. on the facts and circumstance of the case ; [m]otions to disqualify opposing counsel are disfavored because they cause delay and are sometimes abused ). PTAB Decisions on Disqualification To date, the PTAB has not given authorization to a party to file a motion to disqualify counsel in an IPR, CBM, PGR, or derivation proceeding. In Case Nos. CBM , , , , and , petitioner TD Ameritrade Holding Corp. ( TD Ameritrade ) sought authorization to file a motion to disqualify counsel for patent owner Trading Technologies International, Inc. ( Trading Tech ). 65 TD Ameritrade alleged that, at a time shortly after the filing of the Petitions in these proceedings, both TD Ameritrade and Trading Tech were clients of the law firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP ( Finnegan ). 66 TD Ameritrade argued that Finnegan s concurrent representation of both parties caused Finnegan to have a conflict of interest. 67 TD Ameritrade sought authorization from the PTAB to file a motion to disqualify Finnegan from representing Trading Tech based on this alleged conflict of interest. Finnegan stated that Trading Tech engaged Finnegan to represent it in the CBM proceedings after Finnegan no longer represented TD Ameritrade and that therefore, no conflict of interest existed. 68 In denying TD Ameritrade authorization to file the motion, the PTAB observed that at the time of the inquiry, TD Ameritrade was no longer a client of Finnegan. 69 The PTAB further noted that the matters Finnegan handled for TD Ameritrade were not related, substantially to the matters of the CBM proceedings. 70 Citing the BPAI s Anderson v. Eppstein decision, the PTAB stated that TD Ameritrade bears a heavy burden to show that disqualification is necessary and found that TD Ameritrade had not met its burden: Disqualification is resolved on a case-by-case basis, where the moving party bears a heavy burden of proving facts showing that disqualification is necessary. Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1286 (Bd. Pat. App. & Int. 2001) (informative). See also Rules of Practice for Trials Before the Patent Trial and Appeal Board; Final Rule 77 Fed. Reg. 48,630 (August 14, 2012) ( [t]he determination whether to disqualify counsel is based... [W]e see no reason to authorize a motion to disqualify Trading Tech s counsel from Finnegan in this proceeding. Both parties agree that TD Ameritrade is no longer represented by Finnegan, and TD Ameritrade makes no allegation that Finnegan has, currently, any conflict of interest... by remaining as counsel for Trading Tech despite its past representation of TD Ameritrade. Note, in particular, that TD Ameritrade makes no allegations that Finnegan possesses confidential information gained from TD Ameritrade during its representation that is related to these proceedings. 71 Any conflict that existed, the PTAB noted, was merely for a time period in the past. 72 For these reasons, the PTAB denied TD Ameritrade s request for authorization to file a motion to disqualify. 73 In Case No. IPR , petitioner ScentAir Technologies, Inc. ( ScentAir ) sought authorization to file a motion to disqualify counsel for patent owner Prolitec, Inc. ( Prolitec ). 74 ScentAir s request was based on a protective order issued in related district court litigation involving the same patent and parties. 75 The protective order included the following language: Persons for a receiving party (including without limitation outside counsel and EXPERTS) who access CONFIDENTIAL-ATTORNEYS EYES ONLY materials of any producing party shall not, for the period of this action and extending two (2) years following final resolution of this action, draft, supervise, assist, or advise in drafting or amending patent claims or patent specifications, in the U.S. or abroad, related to scent diffusion products or other subject matter of the CONFIDENTIAL-ATTORNEYS EYES ONLY materials. 76 In denying ScentAir s request for authorization to file the disqualification motion, the PTAB found that the protective order only barred litigation counsel from prosecution activities and that counsel was not barred from litigation or trials before the PTAB. 77 The PTAB stated that [a]n inter partes review is not 5
6 original examination, continued examination, or reexamination of the involved patent. Rather, it is a trial, adjudicatory in nature and constituting litigation. 78 The PTAB refused to presume that counsel for Prolitec would violate the protective order, noting that Prolitec s counsel would be subject to sanctions by the district court if it did so. 79 For these reasons, the PTAB denied ScentAir s request for authorization to file a motion to disqualify. 80 Conclusion Parties seeking to disqualify opposing counsel at the PTAB should be prepared for an uphill battle. As described above, the USPTO has stated that motions to disqualify counsel are disfavored, and the PTAB has denied authorization to file such motions in multiple proceedings and has not granted authorization in any. In addition, the PTAB liberally applies 37 C.F.R. 42.1(b), which mandates that the rules governing trial practice be construed to secure the just, speedy, and inexpensive resolution of every proceeding, and appears to disfavor motions that could cause undue delay in a proceeding. Lawyer Contacts For further information, please contact your principal Firm representative or one of the lawyers listed below. General messages may be sent using our Contact Us form, which can be found at Anthony M. Insogna Thomas E. Friebel San Diego New York aminsogna@jonesday.com tefriebel@jonesday.com Gregory L. Lippetz Matthew W. Johnson Silicon Valley Pittsburgh glippetz@jonesday.com mwjohnson@jonesday.com David B. Cochran Joshua R. Nightingale Cleveland Pittsburgh dcochran@jonesday.com jrnightingale@jonesday.com 6
7 Endnotes 1 See Keith Swisher, The Practice and Theory of Lawyer Disqualification, 27 Geo. J. Legal Ethics 71, 128 (2014); Kenneth R. Adamo, Attorney Disqualification in Patent Litigation, 1 Alb. L.J. Sci. & Tech. 177, 179 (1991). 2 See Allegaert v. Perot, 565 F.2d 246, 251 (2d Cir. 1977) (noting that disqualification motions are common tools of the litigation process). 3 Armstrong v. McAlpin, 625 F.2d 433, 437 (2d Cir. 1980) (en banc). 4 Pub. L , 125 Stat. 284 (2011). 5 ScentAir Techs., Inc. v. Prolitec, Inc., No. IPR , Paper 9, at 4 (P.T.A.B. Apr. 16, 2013) Fed. Reg (Aug. 14, 2012), eff. Sept. 16, See TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., No. CBM , , , , , Paper 10 (P.T.A.B. July 24, 2014); ScentAir Techs., No. IPR Fed. Reg ; see also 37 C.F.R. 41.5(b)(1). 9 Id. at In response to the notice of proposed rulemaking relating to PTAB trial practice, the USPTO received several comments that sought clarification regarding the disqualification proceedings authorized by 37 C.F.R (d). Id. The USPTO stated that such comments were noted but not adopted. Id. 10 See Final Rules of Practice, 77 Fed. Reg (Aug. 14, 2012), eff. Sept. 16, Id. at Id. 13 Id. 14 See 37 C.F.R Final Rule, Changes to Representation of Others Before The United States Patent and Trademark Office, 78 Fed. Reg (Apr. 3, 2013), eff. May 3, See Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1285 (B.P.A.I. 2001). The BPAI stated that [w]hile the PTO has no specific rules which govern disqualification [proceedings], generally the provisions of the PTO Code of Professional Responsibility, aided by decisions of federal courts, govern resolution of a disqualification. Id Fed. Reg Id. 19 W. William Hodes, Getting Lawyer Disqualification Straight Book Review, Lawyer Disqualification: Conflicts of Interest and Other Bases by Richard E. Flamm, Banks and Jordan Law Publishing Co., PP. XXIX, 802, 17 Geo. J. Legal Ethics 339, 341 (2004) C.F.R (a) (2013). 21 Id (a)(1). Determining whether representation of a potential client will be adverse to another client can be difficult in patent litigation. For example, those involved in patent litigation must seek to recognize when representation of one potential client, though not directly across the v from a current client, nonetheless will cause substantial, practical harm to the current client. For a full discussion of such issues, see David Hricik, Seeing Adversity in Patent Litigation, 7 Landslide 12 (2015). 22 Id (a). 23 Id (b). 24 David Hricik, Trouble Waiting to Happen: Malpractice and Ethical Issues in Patent Prosecution, 31 AIPLA Q.J. 385, 423 (2003). 25 Hricik, supra note 27, at C.F.R (2012). 27 Manual of Patent Examining Procedure 2301 (2014) U.S.P.Q.2d 1280 (B.P.A.I. 2001). 29 Id. at Id. at Id. at Id. at Id. at Id. at Id. 36 Id. at Id. at Id. at Id. at 1282 n Id. at Id. 42 Id. at Id. at Id. at Id. (emphasis added). 46 Id. 47 Id. at Id. (emphasis added). 49 Id. 50 Id. 51 Id. 52 Id. at Id. 54 Id. 55 Id. at Id. 7
8 57 Id. 58 Id. at See Gilman Corp. v. Gilman Bros. Co., 20 U.S.P.Q.2d 1238, 1240 (Comm r Pat. 1991) (citing Gov t of India v. Cook Indus., Inc., 569 F.2d 737, (2d Cir. 1978)). 60 Armstrong v. McAlpin, 625 F.2d 433, 446 (2d Cir. 1980) (en banc). 61 Gov t of India, 569 F.2d at (citations omitted). 62 See Lisa Dolak, Conflicts of Interest: Guidance for the Intellectual Property Practitioner, 39 IDEA 267, (1999). In the context of patent litigation, the Federal Circuit in deciding issues relating to disqualification looks to standards adopted by the regional circuit from which the appeal comes. Sun Studs, Inc. v. Applied Theory Assocs., Inc., 772 F.2d 1557, 1566 (Fed. Cir. 1985). 63 Smith v. Whatcott, 757 F.2d 1098, 1100 (10th Cir. 1985) (quoting Trust Corp. of Montana v. Piper Aircraft Corp., 701 F.2d 85, 87 (9th Cir. 1983)). 64 See, e.g., Univ. of New Mexico v. Fordham Univ., Interference No. 104,761, Paper No. 47 (B.P.A.I. Apr. 2, 2002) (nonprecedential); see also Fred E. McKelvey, Attorney Disqualification Cases in the PTO, 62 J. Pat. Off. Soc y 625 (1980) (discussing procedure in USPTO disqualification cases and substantive law used by the USPTO in deciding such cases). 65 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., No. CBM , , , , , Paper 10, at 2-3 (P.T.A.B. July 24, 2014). 66 Id. at Id. 68 Id. 69 Id. at Id. at Id. 72 Id. 73 Id. at ScentAir Techs., Inc. v. Prolitec, Inc., No. IPR , Paper 9, at 2 (P.T.A.B. Apr. 16, 2013). 75 Id. at Prolitec, Inc. v. ScentAir Techs., Inc., No. 12-C-483, Paper 62, at 3 (E.D. Wis., May 17, 2013). 77 ScentAir Techs., No. IPR at Id. 79 Id. 80 Id. at 5. Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our Contact Us form, which can be found on our website at The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.
New Post Grant Proceedings: Basics by
New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes
More informationCOMMENTARY. Exclusion of Evidence Before the Patent Trial and Appeal Board. Mechanics of Filing a Motion to Exclude
October 2014 COMMENTARY Exclusion of Evidence Before the Patent Trial and Appeal Board Post-issue challenges at the Patent Trial and Appeal Board (the Board ) 1 provide an accelerated forum to challenge
More information2012 Winston & Strawn LLP
2012 Winston & Strawn LLP How the America Invents Act s Post-Issuance Proceedings Influence Litigation Strategy Brought to you by Winston & Strawn s Intellectual Property practice group 2012 Winston &
More informationThe New Post-AIA World
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The New Post-AIA World New Ways to Challenge a US Patent or Patent Application Erika Arner FICPI ABC 2013 Conference New Orleans, LA 0 Third Party Patent
More informationInequitable Conduct Judicial Developments
Inequitable Conduct Judicial Developments Duke Patent Law Institute May 16, 2013 Presented by Tom Irving Copyright Finnegan 2013 Disclaimer These materials are public information and have been prepared
More informationPTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences 2015 National CLE Conference Friday, January 9, 2015 Presented by Denise
More informationPost-Grant Proceedings in the USPTO
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Post-Grant Proceedings in the USPTO Erika Arner Advanced Patent Law Institute, Palo Alto, CA December 12, 2013 0 Post-Grant Proceedings New AIA proceedings
More informationU.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act
February 16, 2012 Practice Groups: Intellectual Property Intellectual Property Litigation U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents
More informationAmendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
This document is scheduled to be published in the Federal Register on 08/20/2015 and available online at http://federalregister.gov/a/2015-20227, and on FDsys.gov [3510-16-P] DEPARTMENT OF COMMERCE United
More informationHow To ID Real Parties-In-Interest In Inter Partes Review
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com How To ID Real Parties-In-Interest In Inter Partes
More informationAmerica Invents Act Implementing Rules. September 2012
America Invents Act Implementing Rules September 2012 AIA Rules (Part 2) Post Grant Review Inter Partes Review Section 18 Proceedings Derivation Proceedings Practice before the PTAB 2 Post Grant Review
More informationIS THE DEFINITION OF SAME OR SUBSTANTIALLY THE SAME IN 37 CFR VALID? 1
IS THE DEFINITION OF SAME OR SUBSTANTIALLY THE SAME IN 37 CFR 42.401 VALID? 1 By Charles L. Gholz 2 and Joshua D. Sarnoff 3 INTRODUCTION Section 135(a) of the Leahy-Smith America Invents Act, Public Law
More informationNo OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE S ENERGY GROUP, LLC, ET AL., Respondents.
No. 16-712 IN THE SUPREME COURT OF THE UNITED STATES OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE S ENERGY GROUP, LLC, ET AL., Respondents. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
More informationPROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA)
I. Prior to AIA, there were two primary ways for a third party to invalidate a patent in the patent office: A. Interference under 35 U.S.C. 135 & 37 C.F.R. 41.202, which was extremely limited, as it required:
More informationUSPTO Post Grant Trial Practice
Bill Meunier, Member Michael Newman, Member Peter Cuomo, Of Counsel July 18, 2016 Basics: Nomenclature "IPRs" = Inter partes review proceedings "PGRs" = Post-grant review proceedings "CBMs" = Post-grant
More informationInter Partes Review: At the Intersection of the USPTO and District Court
Inter Partes Review: At the Intersection of the USPTO and District Court Barbara A. Fiacco Duke Law Patent Institute May 14, 2013 Inter Partes Review 1 Overview Background: IPR by the numbers Standing/Privity
More informationInter Partes Review vs. District Court Litigation
Inter Partes Review vs. District Court Litigation February 19, 2015 2 PM ET Ha Kung Wong Inter Partes Review vs. District Court Litigation February 19, 2015 2 PM ET Ha Kung Wong Debbie Gibson v. Tiffany
More informationT he landscape for patent disputes is changing rapidly.
BNA s Patent, Trademark & Copyright Journal Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc.
More informationShould Patent Prosecution Bars Apply To Interference Counsel? 1. Charles L. Gholz 2. and. Parag Shekher 3
Should Patent Prosecution Bars Apply To Interference Counsel? 1 By Charles L. Gholz 2 and Parag Shekher 3 Introduction The Federal Circuit stated that it granted a rare petition for a writ of mandamus
More informationSupreme Court of the United States
No. 16-76 ================================================================ In The Supreme Court of the United States --------------------------------- --------------------------------- J. CARL COOPER,
More informationMonitoring Practitioner Compliance With Disciplinary Rules and Inequitable Conduct
Monitoring Practitioner Compliance With Disciplinary Rules and Inequitable Conduct Intellectual Property Owners Association September 11, 2007, New York, New York By Harry I. Moatz Director of Enrollment
More informationThe use of prosecution history in post-grant patent proceedings
Question Q229 National Group: United States Title: The use of prosecution history in post-grant patent proceedings Contributors: ADAMO, Kenneth R. ARROYO, Blas ASHER, Robert BAIN, Joseph MEUNIER, Andrew
More informationThis Webcast Will Begin Shortly
This Webcast Will Begin Shortly If you have any technical problems with the Webcast or the streaming audio, please contact us via email at: webcast@acc.com Thank You! 1 Quarterly Federal Circuit and Supreme
More informationPaper No. 11 Tel: Entered: July 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper No. 11 Tel: 571-272-7822 Entered: July 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SEQUENOM, INC. Petitioner v. THE BOARD OF TRUSTEES
More informationPost-Grant Patent Proceedings
Post-Grant Patent Proceedings The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after September 16, 2012, for challenging the validity of
More informationPaper Entered: September 16, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 13 571-272-7822 Entered: September 16, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SONY CORPORATION OF AMERICA and HEWLETT-PACKARD CO.
More informationAmerica Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition
America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition Dave Cochran Jones Day Cleveland December 6, 2012 Part 1: Impact on Litigation Strategy
More informationA Practical Guide to Inter Partes Review. Strategic Considerations Relating To Termination
A Practical Guide to Inter Partes Review Strategic Considerations Relating To Termination Webinar Guidelines Participants are in listen-only mode Submit questions via the Q&A box on the bottom right panel
More informationDerived Patents and Derivation Proceedings: The AIA Creates New Issues In Litigation And PTO Proceedings
Derived Patents and Derivation Proceedings: The AIA Creates New Issues In Litigation And PTO Proceedings Walter B. Welsh The Michaud-Kinney Group LLP Middletown, Connecticut I. INTRODUCTION. The Leahy-Smith
More informationVenue Differences. Claim Amendments During AIA Proceedings 4/16/2015. The Patent Trial and Appeal Board
The Patent Trial and Appeal Board Created by statute, and includes statutory members and Administrative Patent Judges Claim Amendments During AIA Proceedings The PTAB is charged with rendering decisions
More informationCase 1:13-cv GBL-IDD Document 10-2 Filed 05/16/13 Page 1 of 19 PageID# 312
Case 1:13-cv-00328-GBL-IDD Document 10-2 Filed 05/16/13 Page 1 of 19 PageID# 312 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA ALEXANDRIA DIVISION VERSATA DEVELOPMENT GROUP,
More informationIntellectual Property: Efficiencies in Patent Post-Grant Proceedings
Intellectual Property: Efficiencies in Patent Post-Grant Proceedings By Ann Fort, Pete Pappas, Karissa Blyth, Robert Kohse and Steffan Finnegan The Leahy-Smith America Invents Act of 2011 (AIA) created
More informationAIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP
AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, 2012 A Web conference hosted by Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome
More informationDiscovery and Fact Investigation: New Patent Office Procedures under America Invents Act
2013 Korea-US IP Judicial Conference (IPJC) Seminar 1 Discovery and Fact Investigation: New Patent Office Procedures under America Invents Act Nicholas Groombridge Discovery in District Court Litigations
More informationREDUNDANT PRIOR ART REFERENCES AND THEIR PREJUDICIAL EFFECTS ON POST-ISSUANCE REVIEW PETITIONERS
REDUNDANT PRIOR ART REFERENCES AND THEIR PREJUDICIAL EFFECTS ON POST-ISSUANCE REVIEW PETITIONERS ABSTRACT The recent passing of the America Invents Act came with the creation of three brand new forms of
More informationThe Scope and Ramifications of the New Post-Grant and Inter Partes Review Proceedings at the USPTO
The Scope and Ramifications of the New Post-Grant and Inter Partes Review Proceedings at the USPTO By Lawrence A. Stahl and Donald H. Heckenberg The Leahy-Smith America Invents Act (AIA) makes numerous
More informationPreemptive Use Of Post-Grant Review Vs. Inter Partes Review
Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Preemptive Use Of Post-Grant Review Vs. Inter
More informationUSPTO Trials: Understanding the Scope and Rules of Discovery
Client Alert August 21, 2012 USPTO Trials: Understanding the Scope and Rules of Discovery By Bryan P. Collins Discovery may perhaps be one of the most difficult items for clients, lawyers, and their adversaries
More informationAGENCY: United States Patent and Trademark Office, Commerce. SUMMARY: The United States Patent and Trademark Office (USPTO or Office)
This document is scheduled to be published in the Federal Register on 01/19/2018 and available online at https://federalregister.gov/d/2018-00769, and on FDsys.gov Billing Code: 3510-16-P DEPARTMENT OF
More informationExecutive Summary. 1 All three of the major IP law associations-- the American Bar Association IP Law Section, the American Intellectual Property
Why The PTO s Use of the Broadest Reasonable Interpretation of Patent Claims in Post- Grant and Inter Partes Reviews Is Inappropriate Under the America Invents Act Executive Summary Contrary to the recommendations
More informationStatus Quo at the PTAB for Now: Supreme Court Makes No Change to IPR; Judicial Review and Claim Construction Standard Remain the Same
Status Quo at the PTAB for Now: Supreme Court Makes No Change to IPR; Judicial Review and Claim Construction Standard Remain the Same CLIENT ALERT June 30, 2016 Maia H. Harris harrism@pepperlaw.com Frank
More informationPatent Prosecution Update
Patent Prosecution Update March 2012 Contentious Proceedings at the USPTO Under the America Invents Act by Rebecca M. McNeill The America Invents Act of 2011 (AIA) makes significant changes to contentious
More informationHow To Fix The Amendment Fallacy
Intellectual Property How To Fix The Amendment Fallacy This article was originally published in Managing Intellectual Property on April 28, 2014 by Patrick Doody Patrick A. Doody Intellectual Property
More information18-MONTHS POST-AIA: HOW HAS PATENT LITIGATION. Rebecca Hanovice, Akarsh Belagodu, Lauren Bruzzone and Clay Holloway
CHEAT SHEET Increased petitioner participation and evidence gathering throughout the AIA post-grant proceeding provides more incentive for petitioners to pursue patent office litigation. Decreased opportunities
More informationAmerica Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings
PRESENTATION TITLE America Invents Act: The Practical Effects of the New USPTO Post-Grant Proceedings Wab Kadaba February 8, 2012 1 America Invents Act of 2011 Signed by President Obama on Sept. 16, 2011
More informationAre There Really Two Sides of the Claim Construction Coin? The Application of the Broadest Reasonable Interpretation at the PTAB
Chicago-Kent Journal of Intellectual Property Volume 17 Issue 3 PTAB Bar Association Article 5 4-30-2018 Are There Really Two Sides of the Claim Construction Coin? The Application of the Broadest Reasonable
More informationPrecedential Decisions at the PTAB: An Endangered Species?
Chicago-Kent Journal of Intellectual Property Volume 17 Issue 3 PTAB Bar Association Article 2 4-30-2018 Precedential Decisions at the PTAB: An Endangered Species? Robert M. Yeh PH.D Follow this and additional
More informationNos , -1945, WI-FI ONE, LLC,
Nos. 2015-1944, -1945, -1946 IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT WI-FI ONE, LLC, v. BROADCOM CORPORATION, Appellant, Appellee. Appeal from the United States Patent and Trademark
More informationInter Partes Review (IPR): Lessons from the First Year Matthew I. Kreeger
Inter Partes Review (IPR): Lessons from the First Year Matthew I. Kreeger mofo.com Inter Partes Review Key distinctive features over inter partes reexamination: Limited Duration Limited Amendment by Patent
More informationComparing And Contrasting Standing In The Bpai And The Ttab 1. Charles L. Gholz 2. and. David J. Kera 3
Comparing And Contrasting Standing In The Bpai And The Ttab 1 By Charles L. Gholz 2 and David J. Kera 3 Introduction The members of the Board of Patent Appeals and Interferences (hereinafter referred to
More informationUnited States Patent and Trademark Office. Patent Trial and Appeal Board
United States Patent and Trademark Office Patent Trial and Appeal Board PTAB Organization Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall
More informationTECHNOLOGY & BUSINESS LAW ADVISORS, LLC
TECHNOLOGY & BUSINESS LAW ADVISORS, LLC www.tblawadvisors.com Fall 2011 Business Implications of the 2011 Leahy-Smith America Invents Act On September 16, 2011, the Leahy-Smith America Invents Act (AIA)
More informationFriend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board
Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Asserting rights are no longer the province of pencil-pushing technology companies. Many businesses, big and small
More informationFactors Favoring Early Settlement of Post-Grant Proceedings Landslide Vol. 8, No. 6 July/August 2016
Factors Favoring Early Settlement of Post-Grant Proceedings Landslide Vol. 8, No. 6 July/August 2016 MARY R. HENNINGER, PHD 404.891.1400 mary.henninger@mcneillbaur.com REBECCA M. MCNEILL 617.489.0002 rebecca.mcneill@mcneillbaur.com
More informationAIA Post-Grant Proceedings: Evolution of the Rules. Rachel A. Kahler, Ph.D. Patent Agent General Mills, Inc.
AIA Post-Grant Proceedings: Evolution of the Rules Rachel A. Kahler, Ph.D. Patent Agent General Mills, Inc. Christopher B. Tokarczyk Attorney at Law Sterne Kessler Goldstein & Fox, PLLC - 1 - I. Introduction
More informationPost Grant Review. Strategy. Nathan Frederick Director, IP Services
Post Grant Review Strategy Nathan Frederick Director, IP Services Cardinal Intellectual Property 1603 Orrington Avenue, 20th Floor Evanston, IL 60201 Phone: 847.905.7122 Fax: 847.905.7123 Email: mail@cardinal-ip.com
More informationPaper 14 Tel: Entered: July 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 14 Tel: 571-272-7822 Entered: July 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CULTEC, INC., Petitioner, v. STORMTECH LLC, Patent
More informationBROADEST REASONABLE INTERPRETATION
THE UNIVERSITY OF TEXAS SCHOOL OF LAW Presented: 19 th Annual Advanced Patent Law Institute November 6-7, 2014 Austin, Texas BROADEST REASONABLE INTERPRETATION Mark E. Scott Darlene F. Ghavimi Author contact
More informationPOST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER
POST GRANT REVIEW PROCEEDINGS IN THE PTO STEPHEN G. KUNIN PARTNER PATENT TRIAL AND APPEAL BOARD (PTAB) COMPOSITION DIRECTOR DEPUTY DIRECTOR COMMISSIONER FOR PATENTS COMMISSIONER FOR TRADEMARKS APJ 2 PATENT
More informationBCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer
BCLT Back to School: The New Patent Law Explained (Post-Grant Procedures) Stuart P. Meyer Agenda Overview of AIA Post-Grant Approach More Lenses on Patents After Issuance Section 6 Post-Grant Review Proceedings
More informationMAY/JUNE 2014 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT. Edited by Gregory J. Battersby and Charles W. Grimes.
MAY/JUNE 2014 VOLUME 20 NUMBER 3 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT Edited by Gregory J. Battersby and Charles W. Grimes Litigator A Guide to Using Video-Recorded Depositions
More informationFirst-Inventor-to-File
First-Inventor-to-File Duke Patent Law Institute May 14, 2013 Presented by Tom Irving Copyright Finnegan 2013 Disclaimer These materials are public information and have been prepared solely for educational
More informationAmerica Invents Act (AIA) Post-Grant Proceedings
America Invents Act (AIA) Post-Grant Proceedings Various Post-Grant Proceedings under AIA Ex parte reexamination Modified by AIA Sec. 6(h)(2) Continue to be available under AIA Inter partes reexamination
More informationPTAB At 5: Part 3 Fed. Circ. Statistics
Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com PTAB At 5: Part 3 Fed. Circ. Statistics By
More informationPaper Date: September 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 18 571-272-7822 Date: September 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TARGET CORPORATION, Petitioner, v. DESTINATION MATERNITY
More informationConsiderations for the United States
Considerations for the United States Speaker: Donald G. Lewis US Patent Attorney California Law Firm Leahy-Smith America Invents Act First Inventor to file, with grace period Derivation Actions Prior user
More informationTerminating Inter Partes Review Proceedings Before the Patent Trial and Appeal Board
Terminating Inter Partes Review Proceedings Before the Patent Trial and Appeal Board Eldora L. Ellison, Ph.D. Dennies Varughese, Pharm. D. Trey Powers, Ph.D. I. Introduction Among the myriad changes precipitated
More informationAmerica Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch October 11-12, 2011
America Invents Act H.R. 1249 (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch www.bskb.com October 11-12, 2011 H.R. 1249 became law Sept. 16, 2011 - Overview first inventor
More informationChapter 1. Introduction
Chapter 1 Introduction 1:1 Evolution of the Leahy-Smith America Invents Act 1:1.1 Recommendations for Patent System Reform [A] The FTC Report and NRC Report [B] Patent Reform Bills 1:1.2 The Patent Reform
More informationPaper 13 Tel: Entered: March 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 13 Tel: 571-272-7822 Entered: March 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ZOLL LIFECOR CORPORATIOIN Petitioner, v. PHILIPS ELECTRONICS
More informationU.S. Supreme Court Could Dramatically Reshape IPR Estoppel David W. O Brien and Clint Wilkins *
David W. O Brien and Clint Wilkins * Since the June grant of certiorari in Oil States Energy Services, 1 the possibility that the U.S. Supreme Court might find inter partes review (IPR), an adversarial
More informationChanges to the Claim Construction Standard for Interpreting Claims in Trial. Proceedings Before the Patent Trial and Appeal Board
This document is scheduled to be published in the Federal Register on 05/09/2018 and available online at https://federalregister.gov/d/2018-09821, and on FDsys.gov 3510-16-P DEPARTMENT OF COMMERCE United
More informationPATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No.
Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 82 PTCJ 789, 10/07/2011. Copyright 2011 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com PATENT REFORM
More informationUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FACEBOOK, INC., Petitioner
UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC., Petitioner v. SOUND VIEW INNOVATIONS, LLC, Patent Owner Case No. Patent No. 6,125,371 PETITIONER S REQUEST
More informationPresented by Karl Fink, Nikki Little, and Tim Maloney. AIPLA Corporate Practice Committee Breakfast Meeting May 18, 2016
Presented by Karl Fink, Nikki Little, and Tim Maloney AIPLA Corporate Practice Committee Breakfast Meeting May 18, 2016 2016 Fitch, Even, Tabin & Flannery LLP Overview Introduction to Proceedings Challenger
More informationThe Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews
The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews By: Lawrence Stahl and Donald Heckenberg The Leahy-Smith America Invents Act (AIA) includes
More informationThe Patent Bar's Role In Setting PTAB Precedence
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com The Patent Bar's Role In Setting PTAB Precedence Law360,
More informationPaper: 27 Tel: Entered: November, UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper: 27 Tel: 571-272-7822 Entered: November, 30 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AVER INFORMATION INC. AND IPEVO, INC., Petitioner,
More informationRECENT DEVELOPMENTS IN CLAIM CONSTRUCTION
The University of Texas School of Law 22nd ANNUAL ADVANCED PATENT LAW INSTITUTE RECENT DEVELOPMENTS IN CLAIM CONSTRUCTION November 2-3, 2017 Four Seasons Hotel Austin, Texas Kenneth R. Adamo* Kirkland
More informationNavigating the Post-Grant Landscape
Navigating the Post-Grant Landscape John Alemanni Matthew Holohan 2017 Kilpatrick Townsend Overview Substantial Changes Proposed Scope of Estoppel Remains Uncertain Appellate Issues and Cases Covered Business
More informationWill the Board of Patent Appeals and Interferences Rely Upon Dictionary Definitions Newly. Cited in Appeal Briefs? Answer: It Depends
Will the Board of Patent Appeals and Interferences Rely Upon Dictionary Definitions Newly Cited in Appeal Briefs? Answer: It Depends By Richard Neifeld, Neifeld IP Law, PC 1 I. INTRODUCTION Should dictionary
More informationChange in Procedure Relating to an Application Filing Date
Department of Commerce Patent and Trademark Office [Docket No. 951019254-6136-02] RIN 0651-XX05 Change in Procedure Relating to an Application Filing Date Agency: Patent and Trademark Office, Commerce.
More informationPaper Date Entered: November 2, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 21 571-272-7822 Date Entered: November 2, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner, v. VIRNETX INC., Patent
More informationThese materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of
May 14, 2013 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These
More informationPatent Resources Group Federal Circuit Law Course Syllabus
I. Novelty and Loss of Right to a Patent II. III. IV. A. Anticipation 1. Court Review of PTO Decisions 2. Claim Construction 3. Anticipation Shown Through Inherency 4. Single Reference Rule Incorporation
More information2015 IP Law Year In Review John B. Sganga, Jr.
2015 IP Law Year In Review John B. Sganga, Jr. January 7, 2016 knobbe.com Patents: Belief of invalidity not a defense to inducement Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015)
More informationAmerica Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck
America Invents Act (AIA) Post-Grant Proceedings Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck What is included in Post-Grant Reform in the U.S.? Some current procedures are modified and some new ones
More informationIN SEARCH OF A (NARROWER) MEANING
IN SEARCH OF A (NARROWER) MEANING RECENT DEVELOPMENTS CONCERNING CLAIM CONSTRUCTION NIKA ALDRICH OSB Intellectual Property Section August 3, 2016 Nika Aldrich Of Counsel IP Litigation 503-796-2494 Direct
More informationUS reissue procedure can fix failure to include dependent claims
US reissue procedure can fix failure to include dependent claims Journal of Intellectual Property Law & Practice, 2011 Author(s): Charles R. Macedo In re Tanaka, No. 2010-1262, US Court of Appeals for
More informationAIA: How U.S. PTO Proceedings. are Changing Patent Litigation. Post-Grant Review Under the. Practice. David Hoffman. James Babineau.
December 11, 2014 Post-Grant Review Under the AIA: How U.S. PTO Proceedings are Changing Patent Litigation Practice Matthew Wernli David Hoffman James Babineau Post-Grant Review Under the AIA Agenda I.
More informationNewly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense
September 16, 2011 Practice Groups: IP Procurement and Portfolio Management Intellectual Property Litigation Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense On September
More informationIn the Supreme Court of the United States
No. 15-446 In the Supreme Court of the United States CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER v. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK
More informationHOW SHOULD COPIED CLAIMS BE INTERPRETED? 1. Charles L. Gholz 2. Two recent opinions tee up this issue nicely. They are Robertson v.
HOW SHOULD COPIED CLAIMS BE INTERPRETED? 1 By Charles L. Gholz 2 Introduction Two recent opinions tee up this issue nicely. They are Robertson v. Timmermans, 90 USPQ2d 1898 (PTOBPAI 2008)(non-precedential)(opinion
More informationUncertainty About Real Parties in Interest and Privity in AIA Trials
Chicago-Kent Journal of Intellectual Property Volume 17 Issue 3 PTAB Bar Association Article 1 4-30-2018 Uncertainty About Real Parties in Interest and Privity in AIA Trials Evan Day Kevin Patariu Bing
More informationProfessor Sara Anne Hook, M.L.S., M.B.A., J.D AIPLA Spring Meeting, May 14, 2011
Professor Sara Anne Hook, M.L.S., M.B.A., J.D. 2011 AIPLA Spring Meeting, May 14, 2011 The month of May in Indiana is particularly important because of the Indianapolis 500, an event that is officially
More informationPaper 10 Tel: Entered: February 9, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 10 Tel: 571-272-7822 Entered: February 9, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GREAT WEST CASUALTY COMPANY, BITCO GENERAL INSURANCE
More informationThe United States Supreme Court s recent
70 THE FEDERAL LAWYER January/February 2017 Navigating Post-Grant Proceedings: What Two Years of Federal Circuit Decisions and the Supreme Court s Cuozzo Decision Tell Us About Post-Grant Proceedings Before
More informationTrends From 2 Years Of AIA Post-Grant Proceedings
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Trends From 2 Years Of AIA Post-Grant Proceedings
More informationPatents and the Protection of Proprietary Biotechnology Information
Patents and the Protection of Proprietary Biotechnology Information Susan Haberman Griffen Anna Tsang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP May 20, 2005 Page 1 2005 DISCLAIMER These materials
More informationHow to Handle Complicated IPRs:
How to Handle Complicated IPRs: Obviousness Requirements in Recent CAFC Cases and Use of Experimental Data OCTOBER 2017 nixonvan.com District Court Lawsuit Statistics Number of New District Court Cases
More information